On November 4, 2022, the Supreme Court granted certiorari in Amgen v. Sanofi, No. 21-757, to review “[w]hether enablement is governed by the statutory requirement that the specification teach those skilled in the art to make...more
The Federal Circuit recently denied a mandamus petition seeking relief from a district court order denying a motion to dismiss a patent case for improper venue under 28 U.S.C. § 1400(b).
Bel Power Solutions, Inc. sued...more
On March 15, 2022, the Federal Circuit affirmed the Eastern District of Texas’s dismissal of a patent infringement complaint because the asserted patent claims were directed to process automation and therefore not eligible...more
By Dan Staren and David Barker Last week, a Federal Circuit panel vacated a billion dollar jury verdict in favor of plaintiff-appellee California Institute of Technology (“Caltech”) and remanded for a new trial on damages...more
Last week, a split Federal Circuit panel reversed a decision invalidating certain computer-aided-design patent claims because the district court used an incorrect indefiniteness standard....more
In a precedential opinion this week, the Federal Circuit affirmed a district court judgment in favor of Novartis Pharmaceuticals, in an appeal brought by HEC Pharm challenging the written description in Novartis’s 9,187,405...more
The Federal Circuit invalidated Juno Therapeutics, Inc.’s T cell therapy patent for cancer treatment and erased a billion dollar judgment in Juno’s favor. The court held that the jury verdict regarding the patent’s written...more
The Supreme Court upheld assignor estoppel in Minerva Surgical, Inc. v. Hologic, Inc., et al. but held that the Federal Circuit “failed to recognize the doctrine’s proper limits.” In doing so, the Court imposed new...more
The Supreme Court held this week that the United States Patent and Trademark Office’s (“USPTO”) appointment of Patent Trial and Appeal Board (“PTAB”) judges cannot be constitutionally enforced because the USPTO director does...more
Last Friday, the U.S. Supreme Court granted certiorari in Minerva Surgical v. Hologic, thereby agreeing to resolve a long-running debate on patent law’s doctrine of assignor estoppel. Minerva Surgical has asked the Court to...more
In RPX Corp. v. Applications in Internet Time LLC, the Patent Trial and Appeal Board (“PTAB”) held in a precedential opinion that three inter partes reviews (“IPRs”) were time-barred under 35 U.S.C. § 315(b) because the...more
Yesterday, in Thryv, Inc. v. Click-To-Call Technologies LP, the Supreme Court held that Patent Trial and Appeal Board (“PTAB”) decisions regarding the time limit for filing inter partes reviews (“IPRs”) are not subject to...more
4/24/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
In April, we posted an article titled “Section 101 in 2019” summarizing the existing patent eligibility test, discussing recent Federal Circuit decisions, and providing practical strategies for practitioners to navigate the...more
5/29/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Judicial Exception ,
Mayo v. Prometheus ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
Proposed Legislation ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
A recent decision by the Federal Circuit has broadened the potential for declaratory judgment personal jurisdiction to exist based on letters sent to accused patent infringers in a foreign forum. In Jack Henry & Associates,...more
On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark...more
3/7/2019
/ 35 U.S.C. § 145 ,
Administrative Proceedings ,
American Rule ,
Attorney's Fees ,
Certiorari ,
En Banc Review ,
Litigation Fees & Costs ,
Patent Examinations ,
Patent Litigation ,
Patents ,
Prevailing Party ,
Split of Authority ,
Trademarks ,
USPTO
Last week, the Federal Circuit held that tribal sovereign immunity does not apply to inter partes review (IPR) actions instituted at the Patent Trial and Appeal Board. The decision, in Saint Regis Mohawk Tribe et al. v. Mylan...more
7/25/2018
/ Inter Partes Review (IPR) Proceeding ,
IP License ,
Mylan Pharmaceuticals ,
Native American Issues ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
In a 7-2 decision, the Supreme Court of the United States has opened the door for patent owners to recover lost foreign profits under §§ 284 and 271(f)(2) of the Patent Act. Although the Court’s decision in WesternGeco LLC v....more
6/26/2018
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
Last week, a Federal Circuit panel considered whether transferring patents to a tribal nation invoked the tribe’s sovereign immunity precluding inter partes review. The panel heard oral argument in Saint Regis Mohawk Tribe et...more
6/12/2018
/ Generic Drugs ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Mylan Pharmaceuticals ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
On April 24, 2018, in SAS Institute, Inc. v. Iancu, the Supreme Court held that the Patent Trial and Appeal Board (“PTAB”) must decide the validity of every patent claim challenged when it undertakes inter partes review under...more
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et...more
4/25/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Invalidity ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
Right to a Jury ,
SCOTUS ,
Seventh Amendment ,
USPTO
The Supreme Court has granted certiorari to consider whether damages for infringement of a U.S. patent include lost profits resulting from activities outside the U.S....more
1/19/2018
/ Amicus Briefs ,
Foreign Sales ,
Intellectual Property Protection ,
International Litigation ,
Lost Profits ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pending Litigation ,
Petition for Writ of Certiorari ,
Solicitor General ,
WesternGeco LLC v Ion Geophysical Corporation
The Federal Circuit issued guidance yesterday for district courts deciding venue challenges after the Supreme Court’s May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC. In In re Micron Technology, Inc.,...more
On April 10, 2017, Neil Gorsuch was sworn in as the 113th justice of the Supreme Court, filling the vacancy left by Justice Antonin Scalia. While on the Tenth Circuit, Justice Gorsuch wrote opinions on complex trade secret,...more
Strong intellectual property increases the value of a company. Copyrights, trademarks, patents, and trade secrets are some avenues to protect intellectual property, but understanding when they’re available and understanding...more
3/24/2015
/ Alice Corporation ,
Bilski ,
Confidential Information ,
Draft Guidance ,
Food Manufacturers ,
Innovation ,
Mayo v. Prometheus ,
Misappropriation ,
Myriad ,
Patent-Eligible Subject Matter ,
Patents ,
Trade Secrets ,
Trade Secrets Protection Act of 2014 ,
Uniform Trade Secrets Acts ,
USPTO